Susan V. Metcalfe practices in the area of litigation, representing clients in disputes involving trademark, copyright and trade secret; non-competition agreements; product liability; breach of contract; directors and officers liability; and sales and manufacturing. Ms. Metcalfe has represented global franchisors and other companies in litigation involving wrongful franchise termination, breach of manufacturing agreements under the Uniform Commercial Code and other business disputes. She has prosecuted trademark infringement actions and helped clients in a variety of other intellectual property litigation matters.
Ms. Metcalfe is a 2000 cum laude graduate of The Pennsylvania State University, Dickinson School of Law, where she was associate editor of the Dickinson Law Review, and a graduate of the University of Virginia (M.A., 1992) and Elizabethtown College (B.A., summa cum laude, 1990).
Areas of Practice
· Commercial Litigation
· Intellectual Property Litigation
· Franchise Litigation
· 7-Eleven, Inc. v. Upadhyaya, ___ F.Supp.2d ___, 2013 WL 765661 (E.D. Pa. 2013) - Obtained permanent injunction requiring franchisee to surrender convenience store following a full bench trial during which it was established that franchisees had systematically defrauded the franchisor by concealing sales.
· Choice Foods of America, LLC v. Halo, Purely for Pets, Inc. (M.D. Tenn.) - Defended holistic pet food company in action for breach of manufacturing agreement under the Uniform Commercial Code.
· The Stop & Shop Supermarket Company LLC v. Whole Foods Market, Inc. (D. Mass.) - Prosecuted trademark infringement action against world's largest retailer of organic and natural foods over its use of the REAL DEAL trademark.
· Chao v. Pennsylvania Builders Association et al. (M.D. Pa.) - Represented the trustees of one of the country's largest purchasing groups of insurance in a Department of Labor investigation alleging violations of fiduciary duties under ERISA.
· Computer Aid, Inc. v. Newcomer et al. (C.P. Cumberland) - Represented worldwide information technology services firm against former employees, alleging they breached non-competition agreements by contracting directly with the United States Department of the Navy.
· Cooper v. Schoffstall, 905 A.2d 482 (Pa. 2006) - Made new law by successfully petitioning for allocatur and winning favorable Pennsylvania Supreme Court ruling limiting discovery of expert witnesses' personal financial information.
· Elo TouchSystems, Inc. v. Phares (C.P. Dauphin) - Represented worldwide manufacturer of touch-screen display products in action against former employee alleging breach of non-competition agreement.
· Dentsply International v. Perry C. Holden and Heraeus Kulzer, Inc. (S.D.N.Y.) - Represented global manufacturer of dental products in action alleging theft of trade secrets and unfair competition against former employee and direct competitor.
· Duane Morris LLP
- Partner, 2013-present
· Lebensfeld Borker Sussman & Sharon LLP
- Partner, 2012-2013
· McNees Wallace & Nurick LLC
- Member, 2000-2012
· Lancaster Bar Foundation
- Judiciary Committee
- Chair, Trial Section, 2010
- Trustee and Member of Fundraising Committee, 2011-present
· Pennsylvania Bar Association
- Intellectual Property Section
- Litigation Section
- Young Lawyers High School Mock Competition, 2000-2005
· Dauphin County Bar Association
· Federal Bar Association
- Middle District Chapter
· James S. Bowman Inn of Court
Honors and Awards
· Listed in Pennsylvania Super Lawyers Rising Stars, 2008, 2010
· Listed in Lawyers on the Fast Track, 2009
· Listed in Central Penn Business Journal Forty Under 40, 2008
· LG Health Innovation Solutions, Inc.
· Lancaster Central Market Trust
- Trustee, 2009-present
- Member, Financial Task Force, 2008-2009
Civic and Charitable Activities
· Elizabethtown College Pre-Law Club Advisory Board
- Advisor, 2000-present
· American Diabetes Association, Central Pennsylvania Chapter
- Member, Board of Trustees, 2008-2010
· Lancaster Young Professionals Community Service Committee, 2008-2010
· Lancaster County Republican Committee
- Committeewoman, Kings District of East Hempfield Township, 2003-2006
· "Blue Skies and Stormy Weather: Balancing Risks and Rewards of IP in the Cloud," The Legal Intelligencer, October 11, 2011
· "What's Mine is Yours: The Pitfalls of Sharing Trial Technology in an Adversarial System," The Legal Intelligencer, Litigation Supplement, February 2, 2009; reprinted as "How to Handle Technology Bereft Opposition" in Law.com In-House Tech, June 1, 2009
· "Injunctions to Protect Business Interests: Observations from Recent Cases," The Legal Intelligencer, Litigation Supplement No. 2, December 2007
· "Who's Afraid of Nonprofit Board Service?" The Legal Intelligencer, Vol. 229, No. 116, Dec. 15, 2003
· "Function Follows Form - Enforcement of Restrictive Covenants After Company Acquisition May Hinge on Structure of the Deal," MWN Intellectual Property News, Spring 2010
· "Protecting Trade Secrets: Is the Remedy Worse than the Wrong?" Dickinson Law Review, Vol. 1 04, No. 3, Spring 2000
Selected Speaking Engagements
· "Intellectual Property Basics," seminar on IP Strategies, Trademarks, Trade Dress and related IP issues, at B2B marketing agency Godfrey, November 9, 2011
· "When to Hire a Litigator," Business Breakfast Briefing, February 10, 2011
· "Preparing the Expert Witness for Testimony," Lancaster County Bar Association Bench Bar Conference, October 22, 2010
· "Litigation Avoidance," MWN Women's Network seminar, September 29, 2010
· "Drafting and Enforcing Non-Compete Agreements in Today's Economy," Business Breakfast Briefing, March 11, 2010
· Organized and participated in panel presentation, "Your Responsibilities as a Business Manager: An Introduction to Today's World of Employment Law," Lancaster Chamber of Commerce & Industry Executive Women's Forum, Lancaster, Pennsylvania, May 18, 2006
· "Protecting Your Intellectual Property, " Lancaster Bar Association Continuing Legal Education Seminar, March 28, 2006
· "Non-Profit Board Service: Making Sure Your Good Deeds Go Unpunished," Association of Corporate Counsel Chapter Meeting, Harrisburg, Pennsylvania, May 10, 2005